Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77826894 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

            The Examining Attorney has refused registration of Applicant’s MSR mark (“Applicant’s Mark”) on the grounds that Applicant’s Mark is merely a product model designation and fails to function as a trademark.  Applicant respectfully submits that the refusal should be withdrawn because its mark does, in fact, function as a trademark.

 

            Section 1202.16 of the T.M.E.P. provides that “[s]ubject matter used solely as a model, style, or grade designation within a product line does not function as a trademark.”  (emphasis added).  The letter combination “MSR” does not solely indicate a model designation.  Rather, it indicates that Applicant is the exclusive source of the firearms.  Applicant submits that its specimens sufficiently demonstrate that its MSR mark functions as a trademark.  In fact, during the prosecution of Applicant’s BACR and XHR marks for use with firearms, the Trademark Office accepted specimens similar to the ones submitted here and issued registrations for the marks.  (See Exhibits 1 and 2). 

 

            As further evidence of trademark use, Applicant submits the attached substitute specimen (an excerpt from Applicant’s catalog).  This substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use.

 

Based on the foregoing, Applicant respectfully requests that this application be approved for publication.  If you should have any further questions or need additional information about this application, please feel free to contact us.  Your assistance in this matter is greatly appreciated.

EVIDENCE
Evidence in the nature of Exhibit 1 and Exhibit 2 to response. has been attached.
Original PDF file:
evi_74202224200-135006513_._MSR_-_Exhibit_1.pdf
Converted PDF file(s) (9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_74202224200-135006513_._MSR_-_Exhibit_2.pdf
Converted PDF file(s) (9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 013 for Firearms
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

In International Class 013, the mark was first used at least as early as 05/00/2010 and first used in commerce at least as early as 05/00/2010.

Proposed: Class 013 for Firearms
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

In International Class 013, the mark was first used at least as early as 05/00/2010. and first used in commerce at least as early as 05/00/2010.

Applicant hereby submits a new specimen for Class 013. The specimen(s) submitted consists of an excerpt from Applicant's catalog..
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU0-74202224200-135006513_._MSR_-_Substitute_Specimen.pdf
Converted PDF file(s) (5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Randy Springer/      Date: 07/20/2011
Signatory's Name: Randel S. Springer
Signatory's Position: Attorney of Record, NC Bar Member

Response Signature
Signature: /Randy Springer/     Date: 07/20/2011
Signatory's Name: Randel S. Springer
Signatory's Position: Attorney of Record, NC Bar Member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77826894
Internet Transmission Date: Wed Jul 20 14:48:55 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201107201448555
00345-77826894-480cfdc1a6e103589496667d5
bf5375e839-N/A-N/A-20110719135006513393